Ex Parte Geller et al

Patent Trials and Appeals Board

Jun 28, 2019

14932730 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/932,730 11/04/2015
29880 7590 07/02/2019
FOX ROTHSCHILD LLP
PRINCETON PIKE CORPORATE CENTER
997 LENOX DRIVE
BLDG. #3
LAWRENCEVILLE, NJ 08648
FIRST NAMED INVENTOR
Avishai Geller
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
137664.00111 5313
EXAMINER
EUSTAQUIO, CAL J
ART UNIT PAPER NUMBER
2683
NOTIFICATION DATE DELIVERY MODE
07/02/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocket@foxrothschild.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte A VISHAI GELLER and SAMUEL J. SWERDLOW
Appeal 2017-008990 1
Application 14/932,730
Technology Center 2600
Before JAMES R, HUGHES, MONICA S. ULLAGADDI, and
JOYCE CRAIG, Administrative Patent Judges.
ULLAGADDI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. An oral hearing was held on April 23, 2019 and a transcript of
the hearing was entered into the record. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 The real party in interest is Maven Machines, Inc. App. Br. 3.
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Application 14/932, 730
STATEMENT OF THE CASE
Independent claims 1 and 11, reproduced below, are illustrative of the
subject matter at issue in this appeal.
1. A system for monitoring vehicle operator mirror check
procedures, comprising:
a wearable electronic device configured to be worn on a
head of an operator of a vehicle, wherein the wearable
electronic device comprises a motion sensor;
a processing device that is configured to receive a first
set of motion data from the motion sensor corresponding to the
head of the operator;
a memory device portion containing data representative
of a mirror check procedure; and
a memory device portion containing programming
instructions that are configured to cause the processing device
to:
receive the first set of motion data transmitted
from the motion sensor,
analyze the first set of motion data to detect a
pattern of motion corresponding to the head of the
operator,
compare the detected pattern of motion to the
mirror check procedure to determine whether the pattern
of motion complies with the mirror check procedure, and
if the pattern of motion does not comply with the
mirror check procedure, generate an alert.
11. A method for monitoring vehicle operator mirror
check procedures, comprising:
receiving, at a processing device, a first set of motion data,
corresponding to a head of an operator of a vehicle, from a
motion sensor of a wearable electronic device configured to be
worn on the head of the operator of the vehicle;
analyzing, by the processing device, the first set of motion
data to detect a pattern of motion corresponding to the head of
the operator;
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comparing, by the processing device, the detected pattern
of motion to data representative of a mirror check procedure to
determine whether the pattern of motion complies with the
mirror check procedure; and
generating, by the processing device, an alert, if the pattern
of motion does not comply with the mirror check procedure.
REJECTIONS
Claims 1, 2, 9-12, and 18-20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Clarke, Sr. et al. (U.S. Patent No. 5,689,241; Nov. 18,
1997, "Clarke") and He et al. (U.S. Patent Publication No. 2014/0172467
Al; June 19, 2014, "He"). Final Act. 2-8.
Claims 3-8 and 13-17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Clarke, He, and Felkins et al. (U.S. Patent Publication No.
2014/0121897 Al; May 1, 2014, "Felkins"). Final Act. 8-16.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are persuaded the
Examiner has erred.
35 U.S.C. § 103(a)
The Examiner relies on the combination of Clarke and He as teaching
the claimed combination of features recited in claim 1. See Final Act. 2-5.
Specifically, the Examiner cites column 2, lines 12-21 of Clarke as teaching
"a wearable electronic device configured to be mounted over the head of an
operator," as recited in claim 1. Id. at 4; see Ans. 9. Appellants argue that,
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in so doing, the Examiner relies on the teachings of another reference, Chiu,
that are discussed in the background section of Clarke (i.e., column 2, lines
12-21) because "the inventions disclosed in both Clarke and He rely solely
on cameras that are positioned in front of the operator." App. Br. 10.
The cited portion of Clarke discussing the teachings of Chiu states
that "a major problem with the Chiu reference is that it must, at the very
least, be worn by the user in order to be effective." Clarke, 2: 19-21; see
App. Br. 11. Appellants argue that Clarke solves the perceived disadvantage
identified in Chiu "by using a non-wearable infrared camera that faces and
focuses on the eyes and other facials areas of the user." App. Br. 11 ( citing
Clarke, Abstract, 2:33-36 ("Additionally, a need has been felt to provide
such an apparatus and method which overcomes the problems associated
with direct contact or user w[ o ]rn devices.")). Appellants further argue that
Clarke does not teach that a wearable device is a merely less than
desirable-but still alternate-embodiment of its invention.
Instead, Clarke describes a head-worn device in its discussion of
related art specifically to enunciate the shortcomings of such
devices and to clearly discourage the use of such devices, and not
merely to express a preference for devices that are not worn over
the head of a user.
App. Br. 12. Still further, Appellants argue that
[T]he embodiment of Chiu (i.e., the head wearable eye glasses
for monitoring eyelid movement) is not an embodiment of the
invention taught in Clarke, but is instead discussed in the
Background section of Clarke solely to discuss the drawbacks of
previous devices that detect drowsiness in drivers. By using an
embodiment of a prior art reference cited in Clarke's background
to assert that Clarke itself teaches the embodiment of a wearable
monitoring device, the Examiner is impermissibly "pick[ing] and
choos[ing] from any one reference only so much of it as will
support a given position to the exclusion of other parts necessary
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to the full appreciation of what such reference fairly suggests to
one skilled in the art."
Reply Br. 5 (quoting Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc.,
796 F.2d 443 (Fed. Cir. 1986)).
In response to Appellants' teaching away argument, the Examiner
finds that "Clarke merely advances an advantage of one cited embodiment
over another as discussed in the background in citing Chiu" and that "[t]he
difference between the embodiments is that one is not worn on a user while
the other embodiment is worn." Ans. 9. The Examiner further finds that
"[ d]espite the different locations of the sensing devices on each respective
embodiment, the embodiments are so similar that each respective invention
cited in Clarke begs for a comparison and analysis[.]" Id. at 10.
The test for teaching away, however, is not whether embodiments are
so similar that they can be compared. See id. Rather, "[a] reference may be
said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d
1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977, 990 (Fed.
Cir. 2006)). A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
"criticize, discredit, or otherwise discourage" investigation into the invention
claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
In this case, Appellants persuade us that Clarke clearly criticizes,
discourages, and discredits Chiu' s use of a head-worn device. See Clarke,
2:19-21 ("[A] major problem with the Chiu reference is that it must, at the
very least, be worn by the user in order to be effective." ( emphasis added)),
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2:33-36 ("Additionally, a need has been felt to provide such an apparatus
and method which overcomes the problems associated with direct contact or
user w[o]rn devices." (emphasis added)). Indeed, as Appellants note, Clarke
even discloses that
It is a further object of the present invention to provide an
improved sleep detection and driver alert apparatus that utilizes
digital infrared auto-focus image stabilization zoom camera lens
technology to maintain a physically remote monitoring of a user's
eye-nose area, thereby eliminating the need for a user worn or a
close proximity device.
Reply Br. 6 (quoting Clark, 4:52-56).
In the Answer, the Examiner states the following:
On a minor note, claim 1 claims "A system for monitoring
vehicle operator mirror check procedures, comprising: a
wearable electronic device configured" ( emphasis added). The
Examiner points out claiming something "configured" to
perform a follow-on function or include a follow-on structure is
optional claiming (see MPEP 2111.04 regarding "Adapted to,"
"Adapted for," "Wherein," and "Whereby" Clauses[]).
Accordingly, the claim is not positively claiming the wearable
device to be worn on the head of an operator.
Ans. 8. Appellants respond that
[T]he current application makes it clear that the claimed device
is limited to devices that can be worn over the head of a vehicle
driver. See paragraph [0026] and FIG. 2 of the published
application. Accordingly, by ignoring the above phrase
following the "configured to" clause, the Examiner has
overlooked a key patentable feature of the claimed system and
the "configured to" clause states a condition that is material to
patentability and cannot be ignored in order to change the
substance of the invention.
Reply Br. 5 (citing Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329
(Fed. Cir. 2005)). We find Appellants' argument persuasive. The
clause "to be won1 on a head of an operator of a vehicle" following "a
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wearable electronic device" in independent claim 1 is properly
construed as a limitation, and not merely a statement of purpose or
intended use for the invention because it indicates the "essence of the
'
invention" and provides the "first set of motion data from the motion
sensor corresponding the head of the operator" which is received and
analyzed in the following claim limitations. See Vizio, Inc. v. Int 'l
Trade Cornm 'n, 605 F.3d 1330 (Fed. Cir. 2010) ("[T]he 'for
decoding' language ... is properly construed as a limitation, and not
merely a statement of purpose or intended use for the invention,
because 'decoding' is the essence or a fundamental characteristic of
the claimed invention.").
For the foregoing reasons, we are persuaded of error in the rejection
of independent claim 1. The Examiner refers to the rejection of claim 1 to
reject independent claim 11. Final Act. 72; see Ans. 13 ("The Examiner's
response is the same as the examiner's response to the rejection of claim 1,
which are related to these claim limitations."). Accordingly, we do not
sustain the rejection of independent claim 11 for the same reasons set forth
above with respect to independent claim 1. Claims 2-5, 7-10, and 12-20
2 The Examiner cites Ex Parte Pfeiffer, 1962 C.D. 408 (1961) and Ex Parte
Kangas, 125 USPQ 418 (BPAI 1960) and makes statements about the
patentable weight of structural limitations in method claims. Final Act. 7
("To be entitled to weight in method claims, the recited structure limitations
therein must affect the method in a manipulative senses, and not to amount
to the mere claiming of a use of a particular structure ... The mere inclusion
of structure in a method claim does not render it unstatutory or fatally
defective. The structural limitation is of no patentable moment unless it
affects the process in a manipulative sense."). However, the Examiner does
not clearly indicate which, if any, limitations are not afforded patentable
weight, and in any event, relies on the rejection of claim 1.
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depend from independent claim 1 and 11. Thus, we do not sustain the
rejections of these dependent claims.
DECISION
We reverse the rejections of claims 1-20.
REVERSED
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